Anticipat Education Part 5: How to find legal authority relevant for overturning specific rejections

Having the most relevant and current legal authority to advance a particular argument is a time-consuming task. But it is also a very important part of persuasive advocacy in patent prosecution. With Anticipat, we channel PTAB decisions to do much of this work. Anticipat Analytics shows you relevant legal authority (e.g., case law, Guidelines, and MPEP support) that the Board relies on in overturning specific rejections.

The legal authority that the Board relies on to overturn a particular rejection in a given tech center can relevant for responding to a pending Office Action. If it worked on appeal in a related case, that authority might be good to look at in your case. And it isn’t only relevant for a case that you are appealing–it can be persuasive when working with your Examiner.

To understand how to use legal authority on Anticipat Analytics, a little bit of background first. Legal authority goes hand in hand with the corresponding argument. We previously explained how Anticipat Analytics breaks down the most common arguments used by the Board in overturning a particular rejection. The legal authority goes a step further by showing the legal authority relied on in making this particular reversal.

Let’s take as an example an application that has an abstract idea rejection under Section 101 – Patent-ineligible subject matter. Looking up this application in the input field, the abstract idea tags listed are “Step 1”, followed by “Step 2,” then followed by “prima facie case.”

The most common tag for abstract idea is “Abstract Idea – Step 1.” This means that when the Board is reversing abstract idea rejections, most often it does so in step 1 of the Mayo/Alice framework. Within step 1, which legal authority does the Board cite to support its reversal? This is where the legal icon to the immediate right of the tag comes into play.

The Examiner column shown above has the most relevant tags and authority to an application (e.g., they represent Board decisions that have overturned this specific Examiner). But they also have the smallest sample size. The next column, art unit, has more decisions. It provides all the decisions (and legal authority) for this art unit.

The next column, tech center, has even more decisions and legal authority.

Finally, the right-most column displays all the tags for this specific tag. This will provide all the legal authority Board decisions.

This legal authority icon immediately to the right of the abstract idea text is clickable, which reveals the full list of legal authority for step 1 in this tech center. When the legal authority icon is clicked, here is an image of the popup that shows.

Having the relevant legal authority for specific arguments used by judges can help guide strategy in what is persuasive.

Please reach out to us with any questions or comments. We’re standing by for any questions or comments.

Anticipat Team

Anticipat Education Part 4: How to find legal arguments relevant for reversing particular Office Action rejections 

Every patent application is different. So is every Office Action. But there are only a limited number of ways to successfully rebut a given rejection in any Office Action.

Think of Anticipat’s ex parte PTAB database as holding the answers to all the successful ways in which Examiners have been overturned on appeal. Anticipat Analytics breaks down the most persuasive arguments that the Board relies on to overturn this particular ground of rejection of interest. For example, as shown in the below image, the red arrow points to the most commonly used arguments that the Board relied on in reversing obviousness rejections in art unit 3689. See below image.

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This provides a practitioner an outline straight from the Board of successful ways to overcome various grounds of rejection. The clear leading argument for this art unit, as shown above, is that the combination of references must teach or disclose the claim elements. This can guide the practitioner in developing a winning argument by focusing on arguing against the references not teaching what the Examiner purports that they teach.

All these tags are specific to the application’s examiner, art unit, or tech center. You can click on the various tags to further research the context of the arguments to draw appropriate parallels.

Anticipat Analytics organizes the tags the Board uses to overcome rejections to help you in your practice. The efficiencies and knowledge gained pay for themselves within minutes of use. Click here to give it a try.

 

Anticipat Education Part 3: Find reversal rates for an examiner, art unit, tech center

Today, we showcase part of Anticipat Practitioner Analytics, a tool we believe will help you succeed in your practice.

Before we get too deep, a brief foundation is in order. A “reversal rate” for a particular ground of rejection is how often the Board overturns an Examiner’s rejection on appeal. A reversal rate can be used for a given Examiner, art unit, tech center or global USPTO levels.

Anticipat Practitioner Analytics provides you with these reversal rates for any application number.

Simply input an application number at the top of the page, and the engine takes care of matching up the Examiner, art unit, and tech center for this application. See below image.

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After clicking “GO”, the reversal rates for this application’s Examiner, art unit and tech center are displayed.

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This captures some interesting insights. The first relates to the graphs, where the blue color represents the percentage completely reversed and orange represents the percentage partially reversed. The higher the reversal rate for the Examiner compared to other higher-up levels, the less reasonable this type of rejection for this Examiner in general. This is because the more often an Examiner issues unreasonable rejections, the more likely the Board will overturn on appeal.

Take Examiner Borissov above as it relates to Section 101 patent-ineligible subject matter. Having a wholly reversed rate of 50%, this Examiner has a much higher reversal rate than his art unit, which has a wholly reversed rate of 12%. If the Board is overturning the Examiner on this ground that much higher than his art unit, the Examiners Section 101 rejections may not be as sound.

The second interesting insight relates to the numbers of decisions (including the hyperlinked parentheticals). These numbers provide greater context at each level of hierarchy. Plus, by clicking on these decisions, you can find the very decisions that the Board overturned (either partially or completely) for this particular Examiner, art unit, or tech center.

While only Section 101 – patent-ineligible subject matter is shown, this breakdown is available for every ground of rejection.

If you would like to do a lookup for only Examiner or art unit, the fields allow for more targeted lookups. Plus, if you are curious about a particular window of time, you can use the date range to narrow the results. This can come in handy as in some areas the laws can change rather quickly.

Please reach out to us with any questions or comments. We’re standing by for any questions or comments. If you would like for us to demo the product to a group, we are more than happy to do so.

Anticipat Education Part 2: How to use Anticipat Research database

As a patent practitioner, you see different grounds of rejection all the time. Let’s imagine that one Office Action from a particular Examiner has a rejection that you think is bogus. It’s very likely that this Examiner has made similar types of rejections in other cases. Imagine if you could easily see the instances where the authoritative body for this particular Examiner (the PTAB) told the Examiner that this exact ground of rejection was indeed wrong. This information could be very valuable because the Board’s reasoning can be insightful to other cases that have similar rejections.

With Anticipat Research you can look at Examiner’s appeal history in this very way. Our unique methodology that annotates each appeal decision by ground of rejection and outcome allows for easy identification of specific grounds of rejection.

Let’s say you want to see how often your Examiner was reversed on “101 – Patent-ineligible subject matter.” Simply select this ground of rejection filter in the issue section, then input your examiner’s last name. Here, we insert the last name “Hoffman,” select “Reversed” in the outcome section and hit Apply Filters. See below image.

As can be seen, the “Recap” column gives you a high level overview of what the Board decided in each of the displayed decisions.

To broaden the search further from the above example, you may consider selecting  the outcome “Affirmed-in-part” in addition to “Reversed”. By selecting “Reversed” and “Affirmed-in-part”, you will see decisions where the Board reversed all claims and where the Board reversed some claims, but affirmed others.

You can use Anticipat Research for more general information. Say you want to look at all the recent Section 101 – Patent-ineligible subject matter decisions that are reversed. Simply input a date range, select “Section 101 – Patent-ineligible subject matter” and hit Apply Filters. You can then add columns to your results. Say you want to see the art units where these reversed grounds are coming from. Simply select art unit. And the column appears.

With Anticipat Research, you can discover trends and patterns that can concretely help you in your patent prosecution practice.

Feel free to give Research a 14-day free trial.

Let us know if you have any questions or if you would like a demo.

Anticipat Team

Anticipat Education Part 1: How to make the most of daily Anticipat recap emails

This is the first of a series of emails that showcases features of Anticipat so that you can get the most out of the products. Today, we review the daily recap emails.

At Anticipat, we stay current on all newly decided ex parte PTAB appeals so you don’t have to. By default, we deliver subscribers a recap email of these decisions, after a few days for processing. In addition to seeing every ground of rejection at issue and every outcome decided for each case, you’ll also see the tags or the specific rationale the Board relied on in its outcome. See below image.

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As you can see, the recap email provides a comprehensive summary of all the grounds of rejection and outcomes for the day’s decisions.

If receiving an email recap for each day’s ex parte appeals is information overload, you can customize your emails according to your personal preferences. Simply click on the profile link, and select the specific filters that are interesting to you and your practice.

For example, say you are interested in decisions where the Board reversed a rejection Section 101 – patent-ineligible subject matter. By clicking “101 – Patent-Ineligible Subject Matter” under “Issues” and “Reversed” under “Outcomes”, you can be alerted via email only when decisions for that day include a reversed Section 101 rejetion.  

Other possible filters are for specific art units and examiners. This can come in handy as you are preparing a response for a specific Examiner to get alerted to a case where the Board decided the very same rejection you are faced with.

If you do not want any notifications by email, simply select the radio button “No notifications”.

We hope this has been helpful. If you would like for us to demo the product to a group, we are more than happy to do so. Click here to get started with a 14-day free trial.

Please reach out to us with any questions or comments. We’re standing by for any questions or comments.

Anticipat Team
480.779.7093